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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MERCEDES-BENZ USA, LLC and
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`MERCEDES-BENZ U.S. INTERNATIONAL, INC.,
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`Petitioners,
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`v.
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`INNOVATIVE DISPLAY TECHNOLOGIES LLC,
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`Patent Owner.
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`___________
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`IPR2015-00359, Patent No. 7,384,177
`IPR2015-00360, Patent No. 7,300,194
`IPR2015-00361, Patent No. 6,755,547
`IPR2015-00363, Patent No. 7,404,660
`IPR2015-00366, Patent No. 8,215,816
`IPR2015-00368, Patent No. 7,434,974
`IPR2015-00994, Patent No. 6,886,956
`IPR2015-01044, Patent No. 7,384,177
`IPR2015-01067, Patent No. 6,508,563
`IPR2015-01113, Patent No. 7,404,660
`IPR2015-01114, Patent No. 8,215,816
`IPR2015-01115, Patent No. 7,434,974
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`JOINT MOTION TO TERMINATE PROCEEDINGS
`FOR INTER PARTES REVIEW OF
`U.S. PATENT NOS. 7,384,177; 7,300,194; 6,755,547; 7,404,660; 8,215,816;
`7,434,974; 6,886,956; 6,508,563; PURSUANT TO 35 U.S.C. § 317
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`JOINT MOTION TO TERMINATE
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74(a)-(b), Petitioners
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`Mercedes-Benz USA, LLC and Mercedes-Benz U.S.
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`International,
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`Inc.
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`(“Mercedes” or “Petitioners”), and Patent Owner Innovative Displays Technology
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`LLC (“IDT” or “Patent Owner”) jointly request termination of Inter Partes Review
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`(“IPR”) of: U.S. Patent No. 7,384,177, Case No. IPR2015-00359; U.S. Patent No.
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`7,300,194, Case No. IPR2015-00360; U.S. Patent No. 6,755,547, Case No. IPR
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`2015-00361; U.S. Patent No. 7,404,660, Case No. IPR2015-00363; U.S. Patent
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`No. 8,215,816, Case No. IPR2015-00366; U.S. Patent No. 7,434,974, Case No.
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`IPR2015-00368; U.S. Patent No. 6,886,956, Case No. IPR2015-00994; U.S. Patent
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`No. 7,384,177, Case No. IPR2015-01044; U.S. Patent No. 6,508,563, Case No.
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`IPR2015-01067; U.S. Patent No. 7,404,660, Case No. IPR2015-01113; U.S. Patent
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`No. 8,215,816, Case No. IPR2015-01114; and U.S. Patent No. 7,434,974, Case No.
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`IPR2015-01115. Mercedes and IDT are collectively referred to herein as “Parties.”
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`The Parties agree that each party bar its own fees and expenses.
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`The respective IPRs are in their early stages as follows:
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`Case No.
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`IPR2015-00359
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`IPR Petition
`Filing Date
`12/4/2014
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`IDT Preliminary
`Response Date
`4/30/2015
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`Institution
`Decision Date
`N/A
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`IPR2015-00360
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`12/4/2014
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`4/30/2015
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`5/22/2015
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`IPR2015-00361
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`12/4/2014
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`4/30/2015
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`IPR2015-00363
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`12/4/2014
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`4/30/2015
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`N/A
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`N/A
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`1
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`JOINT MOTION TO TERMINATE
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`Case No.
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`IPR2015-00366
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`IPR Petition
`Filing Date
`12/4/2014
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`IDT Preliminary
`Response Date
`5/2/2015
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`Institution
`Decision Date
`N/A
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`IPR2015-00368
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`12/4/2014
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`4/30/2015
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`IPR2015-00994
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`4/2/2015
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`IPR2015-01044
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`4/13/2015
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`IPR2015-01067
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`4/17/2015
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`IPR2015-01113
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`4/24/2015
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`IPR2015-01114
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`4/25/2015
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`IPR2015-01115
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`4/27/2015
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`N/A
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`N/A
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`N/A
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`N/A
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`N/A
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`N/A
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`N/A
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`N/A
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`N/A
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`N/A
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`N/A
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`N/A
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`N/A
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`No depositions have been taken. The Patent Owner has not filed any
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`substantive paper, and the Patent Owner has submitted no declaration. The Parties
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`have agreed to settle their dispute and have reached an agreement to terminate all
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`of the aforementioned IPRs. The Settlement Agreement between the Parties has
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`been made in writing and is filed separately as Exhibit 1025, concurrently with a
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`Joint Request to Treat Agreement as Business Confidential Information Under 35
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`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). There are no collateral agreements
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`referred to in the Parties’ Settlement Agreement.
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`As stated in 35 U.S.C. § 317(a), because both Mercedes and IDT request this
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`termination, it is understood that no estoppel under 35 U.S.C. § 315(e) shall attach
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`to Petitioners Mercedes. As provided in 37 C.F.R. § 42.73(d)(3), because no
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`JOINT MOTION TO TERMINATE
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`adverse judgment has been entered, it is also understood that, as to the Patent
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`Owner IDT, no estoppel under 37 C.F.R. § 42.73(d)(3) shall attach to IDT.
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`On June 23, 2015, the Parties advised the Board that the Parties had reached
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`a settlement in this IPR, and the Parties sought authorization to file joint motions to
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`terminate the proceedings, using a combined caption listing each of the affected
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`IPRs. On June 24, 2015, the Parties received written authorization to file the joint
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`motions to terminate with a combined caption.
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`The Parties understood that they were also to file a separate paper requesting
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`that the Settlement Agreement be treated as business confidential information as
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`specified in 37 C.F.R. § 42.74(c).
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`Termination of the aforementioned proceedings is appropriate as the parties
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`have agreed to settle their disputes.
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`The patents at issue here have been litigated between the parties in the
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`following case:
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`Description
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`Docket No.
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`Status
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`IDT v. Mercedes-Benz
`U.S. International, Inc., et.
`al.
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`2:14-cv-00535, EDTX
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`Joint Motion to Dismiss
`with prejudice filed June
`22, 2015 and Order
`dismissing case entered
`June 23, 2015.
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`No new litigation or proceeding involving the aforementioned patents is
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`contemplated in the foreseeable future.
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`3
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`JOINT MOTION TO TERMINATE
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`Termination of this proceeding is appropriate at this stage in the proceeding
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`in view of the Settlement Agreement. The Settlement Agreement ends all patent
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`disputes between the parties, including this proceeding. Moreover, as shown
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`above, the Settlement Agreement resulted in the dismissal of the underlying civil
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`action.
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`Both Congress and the federal courts have expressed a strong interest in
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`encouraging settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450
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`U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the
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`settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed.
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`Cir. 1986) (“The law favors settlement of cases.”), cert. denied, 479 U.S. 950
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`(1986). The U.S. Court of Appeals for the Federal Circuit also places a particularly
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`strong emphasis on settlement. See Cheyenne River Sioux Tribe v. U.S., 806 F.2d
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`1046, 1050 (Fed. Cir. 1986) (noting that the law favors settlement to reduce
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`antagonism and hostility between parties). Moreover, the Board generally expects
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`that a proceeding will terminate after the filing of a settlement. See, e.g., Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 46,768 (Aug. 14, 2012).
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`Maintaining this proceeding after Petitioner’s settlement with Patent Owner
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`would discourage future settlements by removing a primary motivation for
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`settlement: eliminating litigation risk by resolving the parties’ disputes and ending
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`the pending proceedings between them. For patent owners, litigation risks include
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`JOINT MOTION TO TERMINATE
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`the potential for an invalidity ruling against their patents. If a patent owner knows
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`that an inter partes review will likely continue regardless of settlement, it creates a
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`strong disincentive for the patent owner to settle.
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`Additionally, it would not be appropriate for the Board to proceed to a final
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`written decision under Section 318(a) in this case because this proceeding is unripe
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`for a final written decision.
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`Wherefore, IDT and Mercedes respectfully request termination of the inter
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`partes review of: U.S. Patent No. 7,384,177, Case No. IPR2015-00359; U.S.
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`Patent No. 7,300,194, Case No. IPR2015-00360; U.S. Patent No. 6,755,547, Case
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`No. IPR 2015-00361; U.S. Patent No. 7,404,660, Case No. IPR2015-00363; U.S.
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`Patent No. 8,215,816, Case No. IPR2015-00366; U.S. Patent No. 7,434,974, Case
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`No. IPR2015-00368; U.S. Patent No. 6,886,956, Case No. IPR2015-00994; U.S.
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`Patent No. 7,384,177, Case No. IPR2015-01044; U.S. Patent No. 6,508,563, Case
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`No. IPR2015-01067; U.S. Patent No. 7,404,660, Case No. IPR2015-01113; U.S.
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`Patent No. 8,215,816, Case No. IPR2015-01114; and U.S. Patent No. 7,434,974,
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`Case No. IPR2015-01115.
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`5
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`Dated: June 30, 2015
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`Respectfully submitted,
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`/s/ Scott W. Doyle
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`Scott W. Doyle (Reg. No. 39176)
`Fried, Frank, Harris, Shriver &
`Jacobson LLP
`801 17th Street, N.W.
`Washington, DC 20006
`(202) 639-7326 (telephone)
`(202) 639-7003 (facsimile)
`scott.doyle@friedfrank.com
`Attorney for Petitioners
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`
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`
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`/s/ Justin B. Kimble
`
`Justin B. Kimble (Reg. No. 58591)
`Bragalone Conroy P.C.
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`(214) 785-6673 (telephone)
`(214) 786-6680 (facsimile)
`JKimble-IPR@bcpc-law.com
`Attorney for Patent Owner
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`
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`/s/ George W. Webb III
`
`
`George W. Webb III (Reg. No. 60737)
`Ahmad, Zavitsanos, Anaipakos, Alavi &
`Mensing, P.C.
`1221 McKinney Street, Suite 3460
`Houston, TX 77010
`(713) 655-1101 (telephone)
`(713) 655-0062 (facsimile)
`gwebb@azalaw.com
`Attorney for Patent Owner
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`6
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`CERTIFICATE OF SERVICE
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`The undersigned hereby confirms that the foregoing document:
`
`JOINT MOTION TO TERMINATE PROCEEDINGS FOR INTER PARTES
`REVIEW OF U.S. PATENT NOS. 7,384,177; 7,300,194; 6,755,547; 7,404,660;
`8,215,816; 7,434,974; 6,886,956; 6,508,563 PURSUANT TO
`35 U.S.C. § 317,
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`was served on this 30th day of June by electronic mail to the following:
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`Patent Owner correspondence address of record:
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`Donald L. Otto, Esq.
`Renner, Otto, Boisselle & Sklar, LLP
`1621 Euclid Avenue
`19th Floor
`Cleveland, OH 44115
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` /s/ Scott W. Doyle
`Scott W. Doyle (Reg. No. 39176)
`Fried, Frank, Harris, Shriver & Jacobson
`LLP
`801 17th Street, N.W.
`Washington, DC 20006
`(202) 639-7326 (telephone)
`(202) 639-7003 (facsimile)
`scott.doyle@friedfrank.com
`Attorney for Petitioners
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`7